Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 3-6 and 16-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 3 and 4 both recite the limitation "the rotation direction of the rotor" in line 3 of both claims. There is insufficient antecedent basis for this limitation in the claims. The antecedent basis for this recitation was originally found in previous claim 2 which has now been canceled.
Claims 3 and 4 have also been amended to define “vertically downward direction” and “vertically upward direction”, respectively. However, the subject matter is a standalone foil bearing which can be manipulated and reoriented into a number of different directions/orientation and it is unclear if someone were to reorient the device so that the angle range is present relative to another axis, the horizontal or even rotating the whole bearing so it is in the horizontal plane with the rotor extending vertically, if they would be infringing upon the claim. Is the intent for the recitation to define the bearing in an installed configuration? If so the scope of the claim shouldn’t be a standalone bearing but rather a machine with a foil bearing installed in it in a specific manner.
Regarding claim 16, the claim was amended to address the previous rejection to state that “at least one groove is formed in a shape corresponding to a stepped portion lateral surface” however it is unclear what shapes this is limiting the claim to. More specifically the lateral surface is 311, this is a flat wall, what shapes for a groove are considered to be in a “shape corresponding” to a flat wall? A groove generally has a bottom and two sides how is this general groove shape related/corresponding to a flat surface? The original issue was based around the use of “corresponding” and the scope of that term in conjugation with the rest of the requirements not being clear, it is suggested that “corresponding” be avoid and the claim state that the groove extends in the same direction as the lateral surface as it appears to be this feature that Applicant was attempting to capture in original claim 16.
Allowable Subject Matter
Claims 1, 7 and 10-15 allowed.
Claim 16, and claims depending therefrom, would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 1, the claim has been amended to include the previously indicated allowable of claim 9, the claim is defining a process, however the process is etching which implies that the remaining region is cut out of a larger homogenous piece of material. A mid-foil that is made of one-piece of material with a stepped portion is not disclosed or rendered obvious the by the prior art of record.
Regarding claim 7, the prior art of record does not disclose or render obvious the claimed combination wherein the step is formed in the mid-foil by bending an otherwise uniformly thick board (or sheet) of material. While this recitation could be viewed as product by process there is structure implied, that being that the mid-foil is one homogenous body, this is not found in the prior art of record.
Regarding claim 16, the prior art of record does not teach nor render obvious the use of groove in the stepped portion in a region adjacent to the starting point, the groove having a longitudinal dimension extending in the same direction as the lateral surface and a width extending in the circumferential direction.
Response to Arguments
Applicant’s arguments with respect to the claim(s) have been considered but are moot because the new ground of rejection, necessitated by the amendment, does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES PILKINGTON whose telephone number is (571)272-5052. The examiner can normally be reached Monday through Friday 7-3.
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/JAMES PILKINGTON/Primary Examiner, Art Unit 3617